T 0224/22 - Deciding on the admissibility of the lower ranking requests; obiter findings

Key points

• "The appeals by the patent proprietor (appellant 1) and opponent 2 (appellant 2) lie from the opposition division's interlocutory decision to maintain the patent in amended form on the basis of auxiliary request 1."
•  "During the opposition proceedings, the patent proprietor filed 44 auxiliary requests after the negative opinion of the opposition division and before the final date according to Rule 116(1) EPC. They were admitted into the proceedings by the opposition division. "
• Question: how, then, can the OD decide on the admissibility of the lower-ranking requests, i.e. the requests ranking lower than AR-1 that was held allowable by the OD? 
• "The present board cannot agree that the opposition division exercised their discretion in an unreasonable way or based on the wrong criteria. They considered that the requests were a serious attempt to address objections raised by the opponents. They also considered the time of filing appropriate in view of their negative opinion. These criteria are appropriate criteria to rely on when deciding on the admission of late requests."
• "According to established case law, the boards do not have the power to disregard on appeal submissions correctly admitted by the opposition division in exercise of their discretion (Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.3.4.4). Therefore, the auxiliary requests are part of the appeal proceedings."
• I have some doubts if AR-2, which was not considered in substance (on the merits) by the OD is a request "on which the decision under appeal was based" in the sense of Art. 12(2) and (4) RPBA.
• I think the case law only applies to requests that were admitted and considered on the merits, but I've not double-checked this. 
  
  
• "The subject-matter of claim 1 of auxiliary request 1 thus does not involve an inventive step (Article 56 EPC)."
• "No objection against auxiliary request 2 was raised in due time."
• The patent is to be maintained on the basis of AR-2.
  
  
• Compare T 1614/21: "The Board agrees with the respondent that the statement at the end of sheet 11 of the grounds for the decision under appeal, i.e. the passage in which auxiliary requests 2*, 3* and 4* are referred to as "late-filed" and "considered as not admissible", is an obiter dictum (auxiliary request 1 having been considered allowable by the opposition division). Regarding the right to be heard, this statement is problematic as the admittance of these requests was "not discussed" with the parties "during the oral proceedings" (decision under appeal, sheet 11) or in writing. "
• See also T 0948/19, where the Board wishes to have more obiter* findings of the OD: "In this context, the following should be noted: In a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at oral proceedings. However, the situation is different for a decision of an opposition division, which may be the subject of an appeal. In this case, if the Board is not convinced by the reasons the opposition division gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the aforementioned further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings."
• * - I understand the part in italics to relate to "further objections raised against that same request that were found unconvincing [by the OD] after having been discussed at oral proceedings". 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220224eu1

1. Admission into the appeal proceedings

1.1 Admission of the auxiliary requests

During the opposition proceedings, the patent proprietor filed 44 auxiliary requests after the negative opinion of the opposition division and before the final date according to Rule 116(1) EPC. They were admitted into the proceedings by the opposition division.

The present board cannot agree that the opposition division exercised their discretion in an unreasonable way or based on the wrong criteria. They considered that the requests were a serious attempt to address objections raised by the opponents. They also considered the time of filing appropriate in view of their negative opinion. These criteria are appropriate criteria to rely on when deciding on the admission of late requests.

According to established case law, the boards do not have the power to disregard on appeal submissions correctly admitted by the opposition division in exercise of their discretion (Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.3.4.4).

Therefore, the auxiliary requests are part of the appeal proceedings.